WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ruby Life, Inc. v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2019-1663
1. The Parties
The Complainant is Ruby Life, Inc., Canada, represented by Safenames Ltd, United Kingdom.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
2. The Domain Name and Registrar
The disputed domain name <ashleymadeson.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2019. On July 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.
The Center verified that the Complaint the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2019.
The Center appointed Assen Alexiev as the sole panelist in this matter on August 15, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a Canadian operator of online dating websites. It was founded in 2002 and owns the online dating brands Ashley Madison, Cougar Life, and Established Men. The Complainant previously operated under the name Avid Life Media, with a subsidiary company called Avid Dating Life Inc. In the past year, the Complainant rebranded itself as Ruby Life Inc.
The Complainant is the owner of the following registrations for ASHLEY MADISON (the “ASHLEY MADISON trademark”):
- the trademark ASHLEY MADISON with registration No. 2812950, registered on February 10, 2004, in the United States for services in International Classes 38 and 45;
- the trademark ASHLEY MADISON with registration No. 007047764, registered on October 13, 2009, in the European Union for services in International Classes 38 and 45; and
- the trademark ASHLEY MADISON with registration No. TMA592582, registered on October 20, 2003, in Canada for services in International Classes 41 and 45.
The Complainant’s Ashley Madison online dating platform operates through the domain name <ashleymadison.com>, which was registered on November 13, 2001.
The disputed domain name was registered on February 5, 2006. It resolves to a webpage that contains links to various third-party dating websites.
5. Parties’ Contentions
The Complainant submits that it uses the ASHLEY MADISON trademark to distinguish its dating services and the trademark has acquired a significant amount of goodwill and recognition globally. The Complainant points out that it has been featured in a number of media outlets, including articles, news reports, and documentaries. The Complainant’s Ashley Madison online dating platform has millions of members in over 50 countries and attracts around 13 million visits per month, which makes it among the top 4,000 most visited websites in the world.
According to the Complainant, the disputed domain name is confusingly similar to the ASHLEY MADISON trademark. The disputed domain name incorporates the trademark in its entirety, with the misspelling of the element “madison”, where the letter “i” was replaced by the letter “e”, but this misspelling does not eliminate the confusing similarity between the disputed domain name and the ASHLEY MADISON trademark.
The Complainant contends that the Respondent lacks rights and legitimate interests in the disputed domain name. It submits that the Respondent has no trademark rights and is not commonly known by the name “Ashley Madeson,” and the Complainant has never given permission to the Respondent to use the ASHLEY MADISON trademark in domain names or for any other purpose. The Complainant points out that the disputed domain name resolves to a webpage with pay per click advertising links to dating websites. According to the Complainant, this shows that the Respondent has based its webpage on the trademark value of the disputed domain name, since “Ashley Madison” has no other meaning and solely relates to the Complainant’s services. The Respondent thus uses the ASHLEY MADISON trademark with the intention to derive advantage from user confusion and to propose links to third-party services related to the Complainant’s business, including competitors of the Complainant, which does not constitute an offering of goods and services in good faith.
The Complainant submits that the Respondent both registered and used the disputed domain name in bad faith. The ASHLEY MADISON trademark was registered several years before the Respondent registered the disputed domain name and has since gained reputation and has become solely associated with the Complainant’s dating services. Therefore, the Respondent registered the disputed domain name because of its confusing similarity with the ASHLEY MADISON trademark.
The Complainant submits that the disputed domain name is being used to redirect Internet users to pay per click links redirecting to third party adult dating websites. By confusing Internet users and redirecting them to competing websites of the Complainant, the Respondent will be generating some kind of revenue depending on the number of Internet users who click on those links.
The Complainant submits that the Respondent is associated with a portfolio of over 70,000 domain names. In this portfolio, the Respondent registered a high number of domain names incorporating famous third-party trademarks to take unfair advantage of them. The Complainant also points out that the Respondent was involved in over thirty disputes under the Policy, all of which resulted in decisions against the Respondent. The Respondent is thus a serial cybersquatter involved in a pattern of abusive registrations of domain names containing third-party trademarked terms.
The Complainant submits that it sent a cease and desist letter to the Respondent on May 17, 2019 and a follow-up email on May 28, 2019, but received no response.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.
A. Identical or Confusingly Similar
The Complainant has provided evidence of the registrations of the ASHLEY MADISON trademark and has thus established its rights in it for the purposes of the Policy.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the sequence “ashleymadeson”. It consists of the elements “ashley” and “madeson”. The “ashley” element is identical to the “Ashley” element of the ASHLEY MADISON trademark, while the “madeson” element is confusingly similar to its “Madison” element, and the only difference between them is that the letter “i” is replaced by the letter “e” in the “madeson” element of the disputed domain name. This difference is not significant and does not prevent the confusing similarity between the disputed domain name and the ASHLEY MADISON trademark.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the ASHLEY MADESON trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on a complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not known by the disputed domain name and is not affiliated to the Complainant, that it has not been authorized to register the disputed domain name, and that the Respondent uses the disputed domain name for a website that contains pay per click links to competitors of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not replied to the Complainant’s contentions and has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.
In the absence of any evidence suggesting otherwise, the disputed domain name appears as a classic example of typosquatting in respect of the ASHLEY MADISON trademark which was registered three years earlier. The disputed domain name resolves to a website that features pay per click links to third party websites that offer dating services in competition with the Complainant. Website owners usually post such links (or do not object to their generation by a third party such as the registrar of the respective domain name) with the expectation that they will generate income.
In view of the above and in the lack of any denial by the Respondent of it, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant and of its ASHLEY MADISON trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s website and attempt to divert them to competitors of the Complainant, likely for a commercial gain. In the Panel’s view, such use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As discussed above, the disputed domain name represents a misspelling of the ASHLEY MADISON trademark and is linked to a website that contains pay per click links redirecting visitors to third party dating websites that compete with the Complainant. Even if these links were generated by a third party (such as the Registrar), the Respondent is in control of the disputed domain name and is thus responsible for the content featured on the associated website. An additional circumstance that has to be taken into account is the fact that the Respondent has been involved in many other proceedings under the Policy in all of which it was found to have acted in bad faith.
Taking all the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name targeting the Complainant. By creating a likelihood of confusion with the Complainant’s ASHLEY MADISON trademark, the Respondent has attempted to attract traffic to the disputed domain name by confusing Internet users that they are reaching an online location of the Complainant and then to divert them to competitors of the Complainant likely for commercial gain.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ashleymadeson.com> be transferred to the Complainant.
Date: August 21, 2019